Are Vulgar Trademarks Protected Free Speech? Recent First Amendment Cases are Changing the Contours of Trademark Law

On April 15, 2019, the Supreme Court of the United States will hold oral arguments on Iancu v. Brunetti. The case will decide if the “immoral” and “scandalous” clauses of Section 2(a) of the Lanham Act violate the free speech clause of the First Amendment. Section 2(a) currently permits the USPTO to refuse registering marks deemed to be scandalous or immoral.

The case began in January 27, 2013, when the USPTO issued its Final Office action refusing to register the “FUCT” trademark for a streetwear clothing brand run by Los Angeles-based artist Erik Brunetti. After numerous appeals to agencies and courts, Mr. Brunetti finally secured a victory for his mark in December 15, 2017, when the Federal Circuit held that Section 2(a)’s bar on immoral and scandalous marks infringed on Mr. Brunetti’s free speech rights.

This reversed the Trademark Trial and Appeal Board’s holding that the mark was not registrable under Section 2(a). In response, the Director of the USPTO appealed the decision to the Supreme Court. On January 4, 2019, the Court agreed to hear the case.

The Federal Circuit Court found substantial evidence showing the mark is immoral and scandalous. There is no doubt what “FUCT” means in the marketplace. “It is undisputed the word ‘fuck’ is… vulgar and an extremely offensive expression,” and Brunetti’s use of mark on “products containing sexual imagery” exudes an “unmistakable aura of negative sexual connotations…[and] makes it more likely that the mark will be perceived as the phonetic equivalent of the word ‘fucked.’”

Nevertheless, the Federal Circuit held barring federal registration for the mark would violate Mr. Brunetti’s free speech rights. Section 2(a)’s ban on “immoral” and “scandalous” marks is a concededly content-based restriction, and the Federal Circuit held that protecting the public from profane and scandalous marks is neither a substantial nor compelling interest for government to ban such marks. The Court noted that the “immoral” and “scandalous” clauses also infringed on other adults’ “right to view and hear speech that is profane and scandalous,” should they seek out Brunetti’s wares in the marketplace.

The Federal Circuit also found the “immoral” and “scandalous” clauses cannot be narrowly tailored because they are enforced in a “subjective” and “unpredictable” fashion. For example, in 2011, the USPTO refused registration for marks like “GOT MILF (clothing), [and] MILF MANIA (adult online services),” but registered the marks “FAT MILF (sandwich), and MILF NEXT DOOR (adult online services).” The Federal Circuit did not understand why some of these were approved while others were not. Even the Trademark Trial and Appeals Board said the guidelines for determining whether marks are scandalous are “somewhat vague” and “highly subjective.”

This new Supreme Court case is a sequel to Matal v. Tam, decided in 2017. In Matal, the USPTO refused to register the “Slants” trademark to an Asian-American rock band because the mark is a racial slur disparaging Asians, despite the band’s attempt to re-appropriate the term. The Supreme Court unanimously held that the “disparagement” clause of Section 2(a) was unconstitutional because trademarks are expressive private speech, and banning registration for disparaging marks “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.” So trademarks like Nike’s “just do it,” or the swoosh emblazoned on its shoes, are protected by the First Amendment – much like jackets worn inside a courthouse emblazoned with the words “Fuck the Draft.”

But Matal left unfinished business. None of the Justices addressed the issue of whether trademarks were commercial speech, and they were split four-three-one on what constitutional protection would apply if trademarks were commercial speech. A majority of the Court has also not yet addressed if the Principal Register is a limited public forum for marks, and if trademark registration is part of the government’s spending clause power. Iancu v. Brunetti is an opportunity for a new nine member Supreme Court, with the additions of Justices Gorsuch and Kavanaugh, to decisively answer these questions. The decision will impact the feasibility of challenging both state and federal trademark laws.

Broader First Amendment Trends Impacting Trademark Law

While in the registration context, the First Amendment expands the scope of protected trademarks, in the infringement context, it also limits the kinds of claims that can be brought. In 2017, the 9th Circuit Court of Appeals held that Twentieth Century Fox’s use of the “Empire” mark in the popular TV show Empire, about a fictional hip hop record label, was protected by the First Amendment. This barred trademark infringement claims by Empire Distribution, a real-life hip hop record label that owned the “Empire” mark. Applying the Rogers test, the 9th Circuit found Fox’s use of the “Empire” mark had artistic relevance to the TV show. The show is set in New York, the Empire State, and the media conglomerate it depicts is a figurative empire. The use of a mark is also not misleading, as it does not reference the real-life Empire Distribution label.

First Amendment considerations also often lurk in the background of many cases applying the “fair use” defense to trademark infringement. And there are First Amendment defenses to several trademark-related claims, like false advertising, and the right of publicity. For these reasons, the trademark attorneys at Arent Fox closely monitor developments in First Amendment doctrine to benefit their clients.

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